Intellectual Property Law

Intellectual property law questions? Ask a lawyer

Ask a Lawyer,
Get an Answer ASAP!

I had a name trademarked and it was in commerce but I did…

Customer Question
I had a name trademarked...
I had a name trademarked and it was in commerce but I did not file the necessary documents to show continued use between 5th and 6th years and the trademark stands cancelled for this name. Can a different entity apply to get this name trademarked?
Submitted: 2 years ago.Category: Intellectual Property Law
Show More
Show Less
Ask Your Own Intellectual Property Law Question
Answered in 6 minutes by:
2/24/2016
IP Lawyer: Law Educator, Esq., Lawyer replied 2 years ago
Law Educator, Esq.
Category: Intellectual Property Law
Satisfied Customers: 126,953
Experience: Attorney practicing all aspects of copyright/trademark law
Verified
Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.
When a trademark is cancelled for non-renewal, then any other person or entity can apply to the USPTO and seek to obtain that trademark. A cancelled mark, even if it was previously used in commerce, is available for anyone to take and use without regard to the previous owner's use and they can register the mark in their name and get the rights to the mark.
Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
My understanding is a trademark is for 10 yrs. I applied for the mark in 2008 and I was supposed to file documents for continued use between 2013 and 2014. Since I did not file this document the name mark was cancelled May 2015. You mean to say that any entity is eligible to apply to get this name trademarked and can they use this for the same purpose that we were in commerce for?
IP Lawyer: Law Educator, Esq., Lawyer replied 2 years ago
Thank you for your reply.
Yes, but once the registration was cancelled, it is open for anyone else to use. You would have to reapply to reinstate your trademark to preserve it. If you do not reapply, then anyone can apply for the mark, since it is cancelled and cancelled means no longer valid. So you have to apply to get it reinstated if you want to protect your registered rights to the mark.
Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
Will a international trademark be acknowledged in US courts and in other country courts?
IP Lawyer: Law Educator, Esq., Lawyer replied 2 years ago
Thank you for your reply.
Yes an international trademark is enforceable in the US and other countries where they are party to the international treaty on trademarks.
Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
There is a website www.XYA.com that has been in commerce for 10 yrs since 2006 and they haven't applied any trademark to operate this website for all these years. They are operating this website in certain industry, now suddenly some other company pops up in 2016 and tries to get a similar domain name with a different extension (like xya.co/xya.uk) and applies a trademark for this name. What will happen to the 1st gut if the trademark is with the 2nd guy? Does the 1st guy have to cease its operations after all these 10 yrs of operating this website?
IP Lawyer: Law Educator, Esq., Lawyer replied 2 years ago
Thank you for your reply.
The first company using the mark in commerce continuously, even if they do not have a registration, can assert a common law trademark, which gives them limited rights. The limited rights is that if they can prove continued use in commerce they can seek to stop anyone else from infringing on their mark, but they cannot seek the damages they could seek if the mark is registered. If the second person tries to apply for a mark, then the first can file an objection or to cancel the mark based on the first having continuously used the mark in commerce as a common law trademark.
So no, the first guy has a common law trademark still and can seek to stop them from using the mark upon proof the first still uses it in commerce. The first party just cannot seek the statutory damages only a right to stop them from using the mark.
Ask Your Own Intellectual Property Law Question
Was this answer helpful?

How JustAnswer works

step-image
Describe your issueThe assistant will guide you
step-image
Chat 1:1 with an ip lawyerLicensed Experts are available 24/7
step-image
100% satisfaction guaranteeGet all the answers you need
Ask Law Educator, Esq. Your Own Question
Law Educator, Esq.
Law Educator, Esq.
Law Educator, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 126,953
126,953 Satisfied Customers
Experience: Attorney practicing all aspects of copyright/trademark law

Law Educator, Esq. is online now

A new question is answered every 9 seconds

How JustAnswer works:

  • Ask an ExpertExperts are full of valuable knowledge and are ready to help with any question. Credentials confirmed by a Fortune 500 verification firm.
  • Get a Professional AnswerVia email, text message, or notification as you wait on our site. Ask follow up questions if you need to.
  • 100% Satisfaction GuaranteeRate the answer you receive.

JustAnswer in the News:

Ask-a-doc Web sites: If you've got a quick question, you can try to get an answer from sites that say they have various specialists on hand to give quick answers... Justanswer.com.
JustAnswer.com...has seen a spike since October in legal questions from readers about layoffs, unemployment and severance.
Web sites like justanswer.com/legal
...leave nothing to chance.
Traffic on JustAnswer rose 14 percent...and had nearly 400,000 page views in 30 days...inquiries related to stress, high blood pressure, drinking and heart pain jumped 33 percent.
Tory Johnson, GMA Workplace Contributor, discusses work-from-home jobs, such as JustAnswer in which verified Experts answer people’s questions.
I will tell you that...the things you have to go through to be an Expert are quite rigorous.

What Customers are Saying:

Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises!

Gary B.Edmond, OK

My Expert was fast and seemed to have the answer to my taser question at the tips of her fingers. Communication was excellent. I left feeling confident in her answer.

EricRedwood City, CA

I am very pleased with JustAnswer as a place to go for divorce or criminal law knowledge and insight.

MichaelWichita, KS

PaulMJD helped me with questions I had regarding an urgent legal matter. His answers were excellent.

Three H.Houston, TX

Anne was extremely helpful. Her information put me in the right direction for action that kept me legal, possible saving me a ton of money in the future. Thank you again, Anne!!

ElaineAtlanta, GA

It worked great. I had the facts and I presented them to my ex-landlord and she folded and returned my deposit. The 50 bucks I spent with you solved my problem.

TonyApopka, FL

Wonderful service, prompt, efficient, and accurate. Couldn't have asked for more. I cannot thank you enough for your help.

Mary C.Freshfield, Liverpool, UK

< Previous | Next >

Meet the Experts:

Robert McEwen, Esq.

Robert McEwen, Esq.

Lawyer

883 satisfied customers

Licensed Texas General Practice Attorney

Dimitry K., Esq.

Dimitry K., Esq.

Attorney

561 satisfied customers

I assist my clients with IP questions that arise in their daily course of doing business.

Thomas Swartz

Thomas Swartz

Lawyer

466 satisfied customers

Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.

Ely

Ely

Counselor at Law

461 satisfied customers

Licensed attorney in private practice.

Wilton A. Person

Wilton A. Person

Lawyer

352 satisfied customers

MBA, Experienced and Knowledgeable in Intellectual Property Law

BartEsq

BartEsq

Researcher

192 satisfied customers

Juris Doctor

P. Simmons

P. Simmons

Lawyer

178 satisfied customers

12+ yrs. of legal experience.

< Previous | Next >

Related Intellectual Property Law Questions
I am interested in filing for a trademark for a business
I am interested in filing for a trademark for a business name/identity, and when I searched USPTO the exact name has an active trademark (granted in 2012) in the same business class (apparel), however… read more
Alex Reese
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
Is there is any domain name trademark infringement can be
Is there is any domain name trademark infringement can be involved in this case??Recently someone bought a domain which was previously the official website of a famous human rights and political movem… read more
Law Educator, Esq.
Law Educator, Esq.
Lawyer
Doctoral Degree
126,953 satisfied customers
I opened a small etsy shop in May 2013 under a specific name
Hello. I opened a small etsy shop in May 2013 under a specific name and then began selling items online from it at the start of 2014. When I opened shop, I researched my name and there were no tradema… read more
Law Educator, Esq.
Law Educator, Esq.
Lawyer
Doctoral Degree
126,953 satisfied customers
If I have a business that has been running years and
If I have a business that has been running for some years and I let the trademark to the business name lapse (its status is "cancelled" on the USPTO site as seen below), can anyone purchase the tradem… read more
Alex Reese
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
I have had a copyrighted name 10 years. Recently I
I have had a copyrighted name for over 10 years. Recently I renewed it and want the 3 companies that are using the name online to stop. Instead of the .com which I have they are using the name with .n… read more
montysimmons
montysimmons
Owner Simmons Patents
Doctoral Degree
328 satisfied customers
I trademarked a name 10 years ago. Is there anything further
I trademarked a name 10 years ago. Is there anything further that I must do to maintain it or is it completed once I got the notification from the Trademark office stating it was legally mine.… read more
Alex Reese
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
Hello, This is a trademark question.... Not sure if they are
Hello, This is a trademark question.... Not sure if they are in this area.....? I want to trademark a name and provide a certain business. I have searched the uspto and it is not trademarked, however,… read more
Delta-Lawyer
Delta-Lawyer
Doctoral Degree
3,510 satisfied customers
If two men form an LLC and work under this LLC (entertainment
If two men form an LLC and work under this LLC (entertainment company that produces three shows a year) for several years, is it legal for one of the partners to trademark the name and logo of the LLC… read more
Attorney Wayne
Attorney Wayne
Attorney-at-Law
JD
1,492 satisfied customers
Trademark - I have a registered trademarks but I am not using
Trademark - I have a registered trademarks but I am not using the mark on all of the goods listed. I heard that I could lose the mark because of that. What are my options? Are the same/different optio… read more
montysimmons
montysimmons
Owner Simmons Patents
Doctoral Degree
328 satisfied customers
Question about Trademark Registration/Renewal Process I
Question about Trademark Registration/Renewal Process I have a registered trademark with the USPTO which was cancelled due to failure to "renew" by filing section 8 between the 5th and 6th year after … read more
BizIPEsq.
BizIPEsq.
Employment Technology & Business Lawyer
Doctoral Degree
375 satisfied customers
I own the domain hotscope.com. I put up a best of a web directory
I own the domain hotscope.com. I put up a best of a web directory called hotscope in 2002. I didn't finish it and stopped using the domain because I found out that a company in Japan trademarked the n… read more
BizIPEsq.
BizIPEsq.
Employment Technology & Business Lawyer
Doctoral Degree
375 satisfied customers
I have a question about trademarks. I wrote a video game in
I have a question about trademarks. I wrote a video game in 1993 that was published by another company for several years. They paid me royalties on the game. I have done a trademark search for the nam… read more
Thomas Swartz
Thomas Swartz
Lawyer
Juris Doctor
466 satisfied customers
I used a business name as a DBA registered in New York State
I used a business name as a DBA registered in New York State from 1980 through 1986 and then incorporated under that name in 1986. The corporation was dissolved in 2001. In December 2010 formed an LLC… read more
Delta-Lawyer
Delta-Lawyer
Doctoral Degree
3,510 satisfied customers
We have a wholesale clothing company that sells different items
We have a wholesale clothing company that sells different items some with sayings. One saying that we've been selling since 2004 is Crazy Heifer. We have sold thousands of them throughout the United s… read more
Attorney Wayne
Attorney Wayne
Attorney-at-Law
JD
1,492 satisfied customers
I run an international basketball summer event using a very
I run an international basketball summer event using a very popular web sites name. i created the name and branding for the event four years ago. The website did not have a lot of interest initially i… read more
Attorney Wayne
Attorney Wayne
Attorney-at-Law
JD
1,492 satisfied customers
I want to file for a trademark in USPTO as a corporation, even
I want to file for a trademark in USPTO as a corporation, even though, I haven't incorporated yet in Canada – the country which I am a citizen of. Nor did I file for a trademark in Canada either. I pl… read more
Alex Reese
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
I have an internet radio show and blogging site. I started
I have an internet radio show and blogging site. I started the blogging site in 2009 using the name Generation Psychic. I then hooked up with an internet radio network using the same name..Generation … read more
Law Educator, Esq.
Law Educator, Esq.
Lawyer
Doctoral Degree
126,953 satisfied customers
If someone has a registered trademark, but it is not in use,
If someone has a registered trademark, but it is not in use, may another party claim the same name with different identifying logo and use it and have priority?… read more
Alex Reese
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers

DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.

The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.

The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

Show MoreShow Less

Ask Your Question

x